Legal Definitions - nonelected claim

A nonelected claim refers to a claim within a patent application that a patent examiner has identified as belonging to a different invention than the one the applicant has chosen to pursue for immediate examination. When a patent application describes multiple distinct inventions, the patent office may require the applicant to "elect" one invention and its associated claims for current examination. The claims related to the other, distinct inventions that are not chosen for immediate examination are then designated as nonelected claims. While not examined right away, these claims can typically be pursued in a separate, subsequent patent application, known as a divisional application.

• Example 1: Mechanical Device with Multiple Innovations

  An inventor files a patent application for a new type of robotic arm. The application includes claims for a novel joint mechanism that allows for unprecedented flexibility (Invention A) and separate claims for an innovative sensor array integrated into the arm's "fingers" that provides enhanced tactile feedback (Invention B). The patent examiner reviews the application and determines that the joint mechanism and the sensor array are two distinct inventions. The examiner issues a requirement for the inventor to choose which invention to prosecute first. If the inventor chooses to proceed with the claims related to the novel joint mechanism (Invention A), then the claims describing the integrated sensor array (Invention B) become the nonelected claims. The inventor can later file a divisional application to seek patent protection for the sensor array.

• Example 2: Pharmaceutical Compound and Its Application

  A pharmaceutical company develops a new chemical compound that shows promise in treating a specific type of cancer. Their patent application includes claims for the novel chemical compound itself (Invention A) and separate claims for a specific method of using that compound in combination with an existing therapy to achieve a synergistic effect (Invention B). The patent examiner reviews the application and concludes that the chemical compound and the method of combination therapy are distinct inventions. The examiner issues a restriction requirement, asking the company to choose which invention to examine. If the company elects to pursue the claims directed to the novel chemical compound (Invention A), then the claims describing the method of combination therapy (Invention B) become the nonelected claims. The company can later file a divisional application to seek patent protection for the treatment method.

• Example 3: Software System with Distinct Features

  A software developer invents a new online project management platform. The patent application contains claims describing a unique artificial intelligence (AI) algorithm for predicting project delays (Invention A) and separate claims detailing an innovative collaborative user interface that allows real-time document editing by multiple users (Invention B). The patent examiner determines that the AI algorithm and the collaborative user interface represent two separate and distinct inventions. The examiner requires the applicant to elect one set of claims for examination. If the developer chooses to prosecute the claims related to the AI algorithm for predicting project delays (Invention A), then the claims covering the collaborative user interface (Invention B) become the nonelected claims. These can be pursued in a later divisional application.